T.M.E.P. § 1109.13
Identification of Goods and Services in Statement of Use

Executive summary:

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1109.13 Identification of Goods and Services in Statement of Use

The statement of use must either list or incorporate by reference the goods/services specified in the notice of allowance on or in connection with which the mark is in use in commerce. 15 U.S.C. 1051(d)(1); 37 C.F.R. 2.88(b)(1)(ii). The goods/services specified in the statement of use must conform to the goods/services identified in the notice of allowance. 37 C.F.R. 2.88(i)(1). To incorporate the goods/services by reference, the applicant may state that the mark is in use on "those goods/services identified in the notice of allowance" or "those goods/services identified in the notice of allowance except...[followed by an identification of the goods/services to be deleted]."

If the applicant omits any goods/services specified in the notice of allowance from the identification of goods/services in the statement of use, and the applicant has not expressed a clear intention to delete those goods/services, the examining attorney must inquire as to the discrepancy. 37 C.F.R. 2.88(h)(2). Note: If the applicant files the statement of use through TEAS, and fails to identify and pay the fee for an entire class(es), then the examining attorney should consider the goods/services in the omitted class(es) to have been expressly deleted, and should not issue any inquiry with respect to the goods/services in the omitted class(es). The applicant may not reinsert these goods/services.

If the applicant lists all the goods/services identified in the Notice of Allowance in the section of a pre-printed statement of use form designated for the identification of goods that are not in use (the effect of which is a representation that the mark was not used in connection with any goods), then the applicant has not expressed a clear intention to delete these goods/services, and the examining attorney must inquire as to the discrepancy.

The examining attorney will permit the applicant to amend the statement of use to reinsert any omitted goods/services, if the applicant did not expressly delete the goods/services, and the applicant verifies that the mark was in use in commerce on or in connection with those goods/services before the expiration of the time for filing the statement of use. 37 C.F.R. 2.88(i)(2). Inadvertently omitted goods/services cannot be reinserted by examiner's amendment, because verification is required.

If the applicant wishes to delete goods/services, the applicant should clearly indicate its intention to delete the omitted goods/services to avoid an unnecessary inquiry by the examining attorney.

Trademark Rule 2.71(a), 37 C.F.R. 2.71(a), prohibits additions to the identification of goods/services. If the applicant proposes to expand the identification of goods/services, the examining attorney must refuse to accept the amendment.

The applicant may amend to limit or clarify the identification of goods/services if the amendment does not exceed the scope of goods/services specified in the notice of allowance. 37 C.F.R. 2.71(a). For example, the applicant may amend to limit the goods as to types, channels of trade or class of purchasers, or to restrict an existing item in scope by the introduction of some qualifying language or the substitution of specific for more general terms. The same principles that govern amendments to delete, limit or clarify in general also apply in the examination of the statement of use. See TMEP §§1402.06 et seq.